The Complainants are “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH of Gräfelfing, Germany and Seeshaupt, Germany, respectively, represented by Beetz & Partner, Germany.
The Respondents are PrivacyP of Nobby Beach, Australia and Jay Chow of Shanghai, China. 2. The Domain Name and Registrar
The disputed domain name is registered with RegisterM Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 5, 2012. On September 5, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 7, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on September 7, 2012 providing the registrant and contact information disclosed by the Registrar. In response to a notification by the Center that the Complaint was administratively deficient, the Complainants filed an amended Complaint on September 11, 2012.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 12, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 2, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 3, 2012.
The Center appointed Edoardo Fano as the sole panelist in this matter on October 9, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Panel has not received any requests from the Complainants or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.
Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to Respondent”. Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of the Respondent’s response.
The language of the proceeding is English, being the language of the Registration Agreement as per paragraph 11(a) of the Rules. 4. Factual Background
The Complainants are “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH, German companies operating in the fashion field and owning the trademarks DR. MARTENS and DOC MARTENS, internationally known and particularly famous for shoes and boots, first sold back in the late 1950’s.
The Complainants are the owners of several trademark registrations for DR. MARTENS and DOC MARTENS, among which:
- Community Trademark Registration DR. MARTENS, No. 000059147 of 1996;
- Community Trademark Registration DOC MARTENS, No. 000150144 of 1996;
- Canadian Trademark Registration DR. MARTENS, No. 420485 of 1990;
- United States Trademark Registration DR. MARTENS, No. 1,454,323 of 1983;
- United States Trademark Registration DR. MARTENS, No. 1,798,791 of 1990;
- United States Trademark Registration DOC MARTENS, No. 2,397,734 of 1999.
The Complainants provided evidence in support of the above.
The disputed domain name was registered on November 27, 2005. At the time of filing the Complaint, the disputed domain name pointed to a parking webpage with links to other websites selling DR. MARTENS footwear not authorized or approved by the Complainants as well as websites selling footwear of the Complainants’ competitors. 5. Parties’ Contentions A. Complainant
The Complainants state that the disputed domain name is confusingly similar to their trademarks DR. MARTENS and DOC MARTENS, being phonetically similar and not being sufficient to avoid likelihood of confusion the omission of the letter “s” at the end.
Moreover, the Complainants affirm that the Respondent has no rights or legitimate interests in respect of the disputed domain name since it has not been authorized by the Complainant to register and/or use the disputed domain name and it is not making a noncommercial or fair use of the disputed domain name.
The Complainants submit that the Respondent has registered and is using the disputed domain name in bad faith.
The Complainants further assert that their trademarks DR. MARTENS and DOC MARTENS are well known and the Respondent could not have registered the disputed domain name without knowledge of the Complainants’ trademark rights.
Finally, the Complainants argue that the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its website. B. Respondent
The Respondent has made no formal substantive reply to the Complainants’ contentions and is in default; in reference to paragraphs 5(e) and 14 of the Rules no exceptional circumstances explaining the default have been put forward.
A respondent is not obliged to participate in a proceeding under the Policy but if it fails to do so, reasonable facts asserted by a complainant may be taken as true, and appropriate inferences by the panel, in accordance with paragraph 14(b) of the Rules, may be drawn (see also Reuters Limited v. Global Net 2000, Inc,WIPO Case No. D2000-0441; Microsoft Corporation v. Freak Films Oy,WIPO Case No. D2003-0109; SSL INTERNATIONAL PLC v. MARK FREEMAN,WIPO Case No. D2000-1080; ALTAVISTA COMPANY v. GRANDTOTAL FINANCES LIMITED et. al.,WIPO Case No. D2000-0848; Confédération Nationale du Crédit Mutuel, Caisse Fédérale du Crédit Mutuel Nord Europe v. Marketing Total S.A.,WIPO Case No. D2007-0288). 6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainants are the owners of the trademarks DR. MARTENS and DOC MARTENS both by registration and acquired reputation and that the disputed domain name is confusingly similar to the trademarks DR. MARTENS and DOC MARTENS both phonetically and conceptually.
Regarding the omission of the letter “s” at the end of the disputed domain name, the Panel notes that it is not enough to differentiate the latter from the Complainants’ trademarks DR. MARTENS and DOC MARTENS, since the visual impression is still very similar. Such practice is known as “misspelling” or “typosquatting”, and has been widely condemned in several UDRP decisions. (see, e.g., The Nasdaq Stock Market, Inc. v. NSDAQ.COM, NASDQ.COM and NASAQ.COM, WIPO Case No. D2001-1492; Playboy Enterprises International Inc. v. SAND WebNames - For Sale,WIPO Case No. D2001-0094; Yahoo! Inc. and GeoCities v. Data Art Corp., DataArt Enterprises, Inc., Stonybrook Investments, Global Net 2000, Inc., Powerclick, Inc., and Yahoo Search, Inc.,WIPO Case No. D2000-0587; Pig Improvement Company, Inc. v. Platinum Net, Inc.,WIPO Case No. D2000-1594).
The addition of the word “doctor” is not sufficient to overcome a finding of confusing similarity. The Panel further notes that “DOC” or “DR” may be the abbreviation of the generic term “doctor” (which is part of the Complainant’s trademark).
It is also well accepted that a top-level domain suffix, in this case “.com”, may be ignored when assessing the similarity between a mark and a domain name (see, e.g., VAT Holding AG v. V,WIPO Case No. D2000-0607).
The Panel finds that the Complainants have therefore met their burden of proving that the disputed domain name is confusingly similar to the Complainants’ trademarks, pursuant to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
The Respondent has failed to file a formal substantive Response in accordance with the Rules, paragraph 5.
The Complainants in their Complaint and as set out above have established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. They assert that the Respondent is not using the disputed domain name for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services.
The prima facie case presented by the Complainants is enough to shift the burden of production to the Respondent to demonstrate that it has a right or legitimate interest in the disputed domain name. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain name.
The Panel therefore finds that the Policy, paragraph 4(a)(ii), has been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that “for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that [the respondent has] registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) that [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) that [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] web site or location.”
As regards to the registration in bad faith of the disputed domain name, the reputation of the Complainants’ trademarks DR. MARTENS and DOC MARTENS is clearly established and the Panel finds that the Respondent knew or must have known that the Complainants and/or their trademarks, and that therefore the disputed domain name was registered in bad faith.
As regards the use in bad faith, the disputed domain name points to a webpage with several links, possibly automatically generated, referring to footwear of both the Complainants’ unauthorized DR. MARTENS products and several Complainants’ competitors products.
Therefore, the Panel considers that this use of the website associated with the disputed domain name must be considered in bad faith since some of the links on the website at the disputed domain name, even in the case they are automatically generated, were referring to third party products or services while others were referring to the same products trademarked with the Complainants’ trademark DR. MARTENS. See also WIPO overview of WIPO panel views on selected UDRP questions, Second Edition (“WIPO Overview 2.0”), paragraph 3.4.
All of the above suggests to the Panel that the Respondent intentionally registered and is using the disputed domain name in order to attract, for commercial gain, Internet users to its website in accordance with paragraph 4(b)(iv) of the Policy.
The Panel finds that the Complainants have presented evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain name in bad faith.
The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainants.
Edoardo Fano
Sole Panelist
Dated: October 18, 2012
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